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Patent Law Alert - Egyptian Goddess, Inc. v. Swisa, Inc.

December 19, 2008

In the modern economy, your business’s most valuable asset is often intellectual property.  Intellectual property is protected by trademarks, copyrights, utility patents and design patents. While the courts have provided extensive guidance regarding the enforcement of trademark, copyright and utility patent rights, design patent law has been relatively untouched since the late 1800s. On September 22, 2008, however, an en banc panel of the Federal Circuit Court of Appeals decided Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).  This opinion dramatically alters the landscape of design patent law.

Prior to Egyptian Goddess, proving design patent infringement required a two-part test. First the patentee had to show that in the eyes of the ordinary observer the patented design and the infringed design were “substantially the same” (“The Ordinary Observer Test”). See Gorham Mfg. Co. v. White, 81 U.S. 511 (1871). Then, if the Ordinary Observer Test was satisfied, to prove infringement the patentee also needed to establish “the accused device …. appropriate[s] the novelty in the patented device which distinguishes [the patented device] from the prior art (‘The Point of Novelty Test’).”  See Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984).  The Point of Novelty Test proved a high hurdle to enforcement of design patents. Rarely, could a patentee point to a single portion of their invention that was distinct from every other existing design.

In Egyptian Goddess, the Federal Circuit did away with the Point of Novelty Test. The court held that the proper inquiry for design patent infringement is whether an ordinary observer with knowledge of the prior art would believe that the patented design and the infringed design were substantially similar. In doing away with the Points of Novelty Test, the Federal Circuit lowered the bar for any design patent claim. Accordingly, Egyptian Goddess represents a substantial victory for those looking to enforce their intellectual property rights.

Kercsmar & Feltus handles many intellectual property issues for its clients; for more information, contact Greg Collins at 480.421.1001


Posted on December 19, 2008 | « Back to News